The IPKat

Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, designs, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. Read, post comments and participate!

Death of the "technical effect" test in the UK

As observant IPKat readers may have noticed, there has been a flurry of activity at the UK Patent Office in recent months regarding 'excluded' subject matter under section 1(2) of the Patents Act. This is a direct result of the judgment of the Court of Appeal in Aerotel/Macrossan. Decisions at the UK Patent Office that could have been made earlier appear to have been held over until after this judgment came out in November 2006. We now have, at the latest count, the following decisions that have resulted in refusal under s1(2):

Does this success rate for the applicants of only one partial success in thirteen attempts tell us anything about how (or if) the UK Patent Office's practice has changed since Aerotel? This Kat thinks that it certainly does, and also thinks that it mostly comes down to the fourth step of the test for patentability, as approved by Jacob LJ. The test (from paragraph 40 of the judgment), for those readers who do not already know it by heart, goes like this:

This test was not suggested by Jacob LJ himself, but by Colin Birss on behalf of the UK Patent Office, who claimed that it complied with the previous Court of Appeal case of Merril Lynch, which it must (the court being bound by its previous decisions). In Merril Lynch [1989] RPC 561 Fox LJ stated (at p569):

"it cannot be permissible to patent an item excluded by section 1(2) under the guise of an article which contains that item -- that is to say, in the case of a computer program, the patenting of a conventional computer containing that program. Something further is necessary. The nature of that addition is, I think, to be found in the Vicom [T 208/84] case where it is stated: "Decisive is what technical contribution the invention makes to the known art". There must, I think, be some technical advance on the prior art in the form of a new result (e.g., a substantial increase in processing speed as in Vicom)".

Leaving aside the issue of what the word "technical" means, the new test would, on the face of it, seem to be entirely in line with Merril Lynch, because the technical effect part is taken up by the fourth step. So far, so good.

However, as Jacob LJ said in Aerotel (paragraph 46), the fourth step

"may not be necessary because the third step should have covered that. It is a necessary check however if one is to follow Merrill Lynch as we must".

The problem is, if one follows this reasoning, the fourth step might never in practice be used because failing at the third step will always be fatal. This appears to be the view of the UK Patent Office at least. The fourth step therefore appears to be a backstop against granting a patent, and not a way of incorporating the "technical effect" arguments of Merril Lynch. The effect, if it is ever to be used, appears more to be in allowing other types of inventions to be excluded that do not neatly fall into the s1(2) categories, as in Lux Traffic Controls [1993] RPC 107 (methods for controlling traffic are not patentable).

The practice of the Patent Office in rigidly following Jacob LJ's reasoning has shown in the recent decisions, many of which follow the following reasoning, first used in John Lahiri Khan's application (at paragraph 33):

"The presence or otherwise of a technical effect is therefore a subsidiary factor which will fall to be considered only where an invention passes the first three Aerotel/Macrossan steps".

The practical effect of this new approach is (in this Kat's opinion, at least) that inventions that would have passed the patentability test previously will not pass the new test if the arguments for patentability rely on the presence of a technical effect. This will be good news for opponents of "software patents", but may be creating a new rift between UK and EPO practice.

Death of the "technical effect" test in the UK
Reviewed by David Pearce
on
Friday, February 23, 2007
Rating: 5

The IPKat licenses the use of its blog posts under a Creative Commons Attribution-Non Commercial Licence.

17 comments:

I'm actually in the process of putting some submissions together to the UKPO on this very point, and have been mulling over how the fourth step might come into play useful.

Let's say you come up with a process for herding sheep. Not very technical, to my mind, but also not clearly excluded under any of the listed categories. Then, let's say, you write a computer program which carries out that process. Your contribution is still the process of herding sheep, not the computer program, so you should be able to get past the third step. Nevertheless, the mere running of a computer program is not technical so your claim fails the fourth step as neither your contribution nor its implementation on a computer is technical.

Ha ha! No matter which precedence you rely on; in the end the result seems to be the same as one might get out of a common sense interpretation of Section 1(2). Lets take Macrossan’s step 1: properly construe the claim; as apposed to? ehem!Step 2: identify the actual contribution; i.e. ignore frills and focus on the advance… which again is common sense;Step 3: ask whether it falls solely within the excluded subject matter; If it does, then it’s surely not patentable… that was the point of having an excluded list.Step 4: check whether the actual or alleged contribution is actually technical in nature; Because the excluded list isn’t exhaustive (the people who drafted the section, weren’t completely devoid of foresight); and the “technical effect/nature” test is perfect because that’s what patents are for: technical innovation.

I wish the office would be more confident in applying the section without relying on judgements. Of course each case is different but citing precedence doesn’t make their argument more valid. It just gives the impression that they are being inconsistent and unfair when in reality they have been quite reliable.

The question of “technical effect” being a subsidiary factor is rather academic. In my opinion “technical effect” is an important criterion in determining the “advance” or “actual contribution”!

The sheep herding example might be one of those cases where the application is, though not excluded specifically under section 1(2), nevertheless not allowed. Even though step 3 might be passed, provided that the computer program is not merely automating what was known before (e.g. like Neal Macrossan's invention), the application may well fail at step 4 due to a Lux-type argument (sheep herding is not 'technical'). The argument may well come down to whether sheep herding should be regarded as a field of technology as well as being industrially applicable under s4(1).

Sounds like we're largely in agreement, David, although I would argue that Macrossan was automating a new business method rather than merely something that was done before (otherwise you have to wonder how he got his AU patent). I see Fujitsu as being the ones who were merely automating something known - hence their only contribution was the computer program which did it automatically.

A warning to readers of the above identified post on lasporg.blogspot.com. The author, Christian Miceli, a "lawyer" (qualifications unknown) against so-called software patents, does not seem to understand the basic principles of UK law, in particular those of precedence. Considering that precedence was central to the point I was trying to make, this is a problem. Just bear this in mind when you read his rambling and often incoherent rant. It starts off well, quoting my post at length (I will leave aside for now the issue of copyright infringement), but degenerates somewhat. In the end I am not left with any clear idea about what point he is trying to make. If anyone can identify in my original post a pro- or anti-software patent bias, I would be grateful if it could be pointed out.

The problem with the other blog is not what he says, but what he misses out. Largely it's a rant against the lack of definition of technical. Everyone agrees that this is a problem, and Christian is far from the first person to say it.

However, what is omitted is the fact that none of the words invention, computer program or as such are defined either. There is some comment about invention being "defined" negatively, but this is no definition at all. "A cat is not a dog" is not a definition of a cat unless you happen to be Baldrick. I commented (elsewhere) when CFPH came out that Prescott had a point that there is danger in using an undefined word to try to understand another undefined word but the fact of the matter is, there is more case law about what is technical than there is about what is "an invention" so technical is actually the better defined word by virtue of the precedents that the UK Patent Office are bound by.

He also omits to mention that, while the EPO have cut back the exclusions they have also beefed up the inventive step test to end up in essentially the same place. Whatever people may think of this alleged neutering of the exclusions, I still see it as a pragmatic way of following the intention of the EPC in a simpler way that ensures surety both for applicants AND for third parties.

Ultimately, having gone over this whole deal and re-read all of the UK CoA case law on Friday I have come to the conclusion that the four-step test is in keeping with Merrill Lynch et al so long it is remembered that by moving technical to the fourth step, the third step is now a lower barrier than the old "technical contribution" test. This may seem obvious, but I fear that the UKPO are requiring an element of technicity in applying the third step while rejecting any arguments concerning such technicity because that is supposed to be in the fourth step.

I agree with you that the test would be more or less in line with Merril Lynch if the 3rd step is a lower barrier. I would be interested to see if you are able to persuade the Patent Office that this is (or should be) the case, because I don't think they see it that way.

I've got my first hearing in ages coming up and I hope the outcome will be interesting. I'll highlight the decision when it's issued, although I think it would be inappropriate to comment in detail now or later.

In the meantime, I will say that I agree with you that the Patent Office are not seeing the four-step test as being compatible with Merrill Lynch. In fact, and while I don't claim to have a full understanding of precedent, their current practice implies directly to the contrary.

They state that Aerotel is the definitive statement of the law in light of "Colchester Estates (Cardiff) v Carlton Industries". This judgment was apparently about what to do when you have two conflicting (first instance) decisions, but I've not got my hands on a full copy. From what I've learned via Google, though, the Patent Office are free to take Aerotel as "correct" because the "conflicting" decision in Merrill Lynch was considered by the judges.

Where this line of reasoning falls down, in my view, is that Aerotel was particularly careful to say that their reasoning was entirely in keeping with the earlier CoA judgments and they specifically said that the four-step test was the same as the technical contribution (with rider) test, just restructured. True the judges didn't seem particularly happy with Merrill Lynch (and I'm told that at one point during the case they even said that Merrill Lynch doesn't make sense) but they still went along with it. Accordingly, if the UKPO are interpreting Aerotel as conflcting with Merrill Lynch, they are ignoring the reasoning behind Aerotel itself.

Of these cases, the one which concerns me most is the NEC one. The claimed subject matter was agreed to be novel and inventive but fell down on the excluded subject matter obstacle, even for the claims directed to a mobile telephone. The supporting argument seemed to me to be one of "well I know a phone is not a computer but since it is programmed, I am going to treat it as a computer." Since the functionality of a mobile phone is essentially controlled by the program, does this mean all the "essential patents" are nothing but waste paper?

Is it the case, do you think, that this 4 step reasoning will only apply to applications which are going through the system at present? The clever attorney will surely now be ensuring that - in any current and future applications he works on - anything related to the fourth step becomes an integral part of the claims.

It seems to me that the only real difference between Aerotel and Macrossan was that of the way that one included notions of device within the claims and the other didn't.

I hadn't fully digested the NEC decision when I wrote the post, but now I notice that it does seem to show that the Patent Office want to follow Merrill Lynch only as a further reason for rejecting an application, not for allowing one. Michael Moir of Mathys & Squire seems to have tried Gerontius' arguments and failed. If I may quote paragraph 36 in full:

"The Court [in Aerotel] looked to see if the contribution resided solely in excluded matter in step 3. I fail to see how not applying step 4 after a finding in step 3 that the contribution is excluded is inconsistent with Merrill Lynch. A finding in step 3 that the contribution resides solely in excluded matter means that the contribution is not “technical” and the check in step 4 is redundant. However the converse is not necessarily true; a finding that the contribution does not fall solely within the specific exclusions does not mean it must be “technical”. Thus to be consistent with Merrill Lynch, when the third step is passed step 4 must be invoked to ensure that the contribution is actually technical in nature. Thus Merrill Lynch is followed in the event of an invention failing step 3 or in passing step 3 and failing step 4 (as well of course in passing both steps). The purpose of step 4 is not as Mr Moir suggested at one point to avoid a wrong result which might arise if the contribution were incorrectly identified in step 2".

This seems to fit with my original thoughts on the fourth step being, in the Patent Office's view, a way to refuse an application under the Lux Traffic Controls reasoning.

In response to the latter anonymous comment, I think that any competent patent attorney will try to include in a specification anything that might make an otherwise excluded invention more 'technical'. This would not need to be in the claims from the outset, but could be anywhere in the description, to provide basis for amendments later on. The Aerotel/Macrossan decision will not have changed this. However, simply putting an excluded invention in the form of a physical object will not usually get round the problem. Something else is needed, which is where the 'technical contribution' argument starts.

The 4 step test will not only apply to applications going through the system at the moment, but could also apply to granted patents in proceedings for revocation. There haven't been any revocation proceedings as yet, but there are likely to be in the future.

Interestingly, EP0852363, Robert Silver's Photomosaic patent, is currently undergoing revocation proceedings at the UKPO.

There was also a request for a validity opinion under Section 74A(1)(b) filed on 06.02.2007 (see http://www.patent.gov.uk/patent/p-other/p-object/p-object-opinion/p-object-opinion-advert.htm). While this latter won't (shouldn't!) touch the excluded subject matter issue, it may be interesting to see how the Patent Office deal with these two separate procedures.

The Opinion will not consider whether the invention is excluded, according to s74A(1)(b), which was confirmed in Opinion 22/06. The only grounds the examiner can consider are those of novelty and inventive step. Whether the examiner will consider that the opinion should be put on hold because there are parallel proceedings for revocation is another matter, but I suspect that this will not prevent the opinion from being issued because it doesn't fall within the criteria of Rule 77D(1).

Being involved in a revocation action currently running at the Patent Office, I have already been considering how the Aerocross test applies. It is common ground in that action that the independent claims read onto the prior art except for minor (technically trivial) programming differences. The question then is whether these minor differences provide a “contribution” that extends beyond a mere computer program. If the Aerocross test is supposed to be consistent with Merril Lynch, I don’t see how the UKPO can ignore the question of technical effect, and it seems that this must fall to be considered under steps 2 and/or 3. Step 4 then exists only to ensure that subject matter not explicitly excluded by statute can be refused on the ground of lack of technical contribution.

It would make more sense to me if step 2 served only to identify the “contribution” in terms of the objective, practical respects in which the claimed subject matter differed from the prior art – in the case above, the only differences reside in the programming of known hardware and the manner in which the hardware can be used as a result. Step 3 would then identify this as a “candidate” for exclusion and step 4 would consider whether there is a resultant technical effect that allows it to escape the exclusion. On the other hand, in a case where step 3 shows that the “contribution” is not explicitly excluded, step 4 should still be applied to catch non-technical inventions that are not explicitly excluded by statute.

I think it would make more sense to everyone if step 2 served only to identify the “contribution” in terms of the objective, practical respects in which the claimed subject matter differed from the prior art. Unfortunately, that's Falconer reasoning and it has been rejected by the CoA. CFPH tried to bring it back (at least the UKPO interpreted it that way) but the fact of the matter is that the contribution is not that simple to identify. That's the whole problem with the test, in my view, and the reason why I think the EPO's approach, hated as it is, is a good way to try to make a pragmatic, workable test that isn't open to endless arguments about what the contribution is.

This is one reason to look again at the UKPO's NEC decision. I actually quite like that one. It is very careful about identifying the contribution and then, once the contribution has been identified, it carefully explains why it falls into two different categories of excluded subject matter - no one category would have been enough. I think I've had a hearing with Mr Bartlett and if he's who I think he is, he's scarily intelligent, and it shows in this decision. Whether you agree with him or not is one thing, but it's difficult to find fault in the logic (in contrast to, say, the Nintendo decision)

All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.